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I fear that without instruction from the department I can not include
Schutzgenossen" (or protegés) in my note, for I do not apprehend that persons of other nationality than German can have the same rights as Germans to protection against infringement of their trade-marks in China by Americans, unless the government of the country of which they are citizens or subjects have a trade-mark convention with the United States. This remark applies to “protegés” of Swiss origin to whom you refer, but more particularly to employees of the German legation and consulates in China, most of whom are presumably Chinese. The United States has no “ protegés " in China, so I could not expect you to include this class in your note to me. If the term were applied only to former German subjects whose actual status is in abeyance, as it were, through prolonged sojourn abroad, but who have not absolutely lost their German nationality, I might see my way to include this term with a definition of it.
As regards your remark on the use of the term “punishment” that it may be understood as implying only prosecution in criminal proceedings and as precluding civil, I am disposed to think that “punishment covers both. I am not prepared, however, to state what are the provisions of our law as to the protection afforded by it to the German owners of trade-marks duly registered in the t'nited States, but whatever they are, and presumably they are satisfactory to your Government, since it has a convention with the United States for the reciprocal protection of our respective countries of trade-marks of our nationals, I can assure you that we are willing to extend them to your people in China where “ effectual provision " exists in our consular Courts against all infringement by all American citizens.
Should you deem it necessary that I should include “ Schutzgenossen " in my note, it will afford me much pleasure to submit the suggestion to the Department of State for its instructions. Very sincerely, yours,
(Signed) W. W. ROCKHILL.
The Secretary of State to Minister Rockhill. No. 70.]
DEPARTMENT OF STATE,
Washington, November 8, 1905. Sir: I have to acknowledge the receipt of your dispatch No. 95, of September 15 last, inclosing a copy of correspondence between you and the German minister to China in reference to the proposed exchange of notes between you and him for the purpose of extending
China the provisions of the trade-marks convention of the United States and Germany.
Our trade-mark law (sec. 16, act of Feb. 20, 1905) makes provision for the bringing of an action for damages by the owner of a trade-mark registered under the act against any person who, without the consent of the owner, reproduces, counterfeits, copies, or imitates such trade-mark, etc. Section 19 provides for the obtaining of injunctions to prevent the violation of any right of the owner of a registered trade-mark and declares that upon a decree being rendered for the wrongful use of a trade-mark the owner shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages sustained. Section 25 declares that any person who shall procure the registration of a trade-mark or entry thereof in the office of the Commissioner of Patents by a false or fraudulent declaration or representation, or by any false means, shall be liable to pay any damages sustained in consequence thereof to the injured party, to be recovered by an action on the case.
There is, however, no statute of the United States making the infringement, counterfeiting, etc., of a trade-mark criminal. It seems to me, therefore, that the word “punishment” should not be used in the draft of notes to be exchanged. The language employed in the exchange of notes concerning the protection of trade-marks in Morocco, viz, that “ henceforth trade-marks of British citizens, having been duly registered in the United States of America, will be protected against infringement,” etc., or similar language, should be used.
For your convenient use I inclose herewith three copies of the pamphlet entitled “ United States and Great Britain Protection of Trade-marks in Morocco-Agreement Effected by Exchange of Notes, December 5, 1899."
As the United States has no “protégés” in China, and as, under our treaties with China and the laws passed to carry them into effect, there would appear to be no authority for subjecting “ protégés” to the consular jurisdiction, you should inform the German minister that this Government is unable to include "Schutzgenossen," or
protégés,” within the scope of the proposed arrangement.
In answer to your request for instructions by cable, the following telegram was sent you on the 6th instant, which I now confirm.
Acknowledging your ninety-five, infringement of trade-marks is not made criminal by our law, but ample provision is made therein for protection against infringement, by injunction and civil suits for damages. Period. Can not include 'protégés' within scope of arrangement, as that relation is unknown to our laws and treaties with China." I am, sir, etc.,
Minister Rockhill to the Secretary of State.
Peking, China, January 25, 1906. SIR: I have the honor to acknowledge the receipt of the department's dispatch No. 70, of November 8 last, and unnumbered dispatch of December 9 last, the former expressing the department's views regarding the penalizing of infringements of trade-marks and informing me that there is no statute of the United States making the infringement, counterfeiting, etc., of a trade-mark criminal, and that the department is of the opinion that the word “punishment” should not be used in the draft of notes exchanged.
On learning the department's views as to the use of the word in question, I addressed a note to each of the ministers with whom I had exchanged notes on the subject, a copy of which I inclose, informing them “ that the word punishment must be understood to refer to a civil action only, and not to a criminal procedure as might be inferred from the use of the word without the present explanation added thereto."
I have also informed the various consuls that the word punishment must not be interpreted to include a criminal offense, and have called to their attention sections 16, 19, and 25 of our trade-mark law (act of Feb. 20, 1905). I have the honor, etc.,
W. W. ROCKHILL.
Ur. Rockhill to the ministers of Great Britain, France, the Netherlands,
Belgium, Germany, and Italy.
PEKING, January 22, 1906. MR. MINISTER AND DEAR ('OLLEAGUE: In connection with the notes which I had the honor to exchange with your excellency on Great Britain, June 28, 1905; France, October 3, 1905; the Netherlands, October 23, 1905; Belgium, November 27, 1905; Germany, December 6, 1905; Italy, December 18, 1905, looking to the reciprocal protection from infringement by our respective nationals in China of trade-marks belonging to them I duly transmitted copies of the same to my Government.
In reply the Secretary of State has called to my attention, as possibly misleading, the use made in my note to you of the word punishment” by our consular courts in China of American citizens who may have infringed in China trade-marks the property of persons under the jurisdiction of Great Britain, France, the Netherlands, Belgium, Germany, and Italy.
In view of the fact that there is no statute in the United States making the infringement, counterfeiting, etc., of a trade-mark a criminal offense, and that effectual provision exists by a civil action for damages by the owner of a trademark, my Government is of the opinion that the word “punishment" should be understood to refer to a civil action only, and not to a criminal procedure, as might be inferred from the use of the word in question without the present explanation added thereto.
I beg leave to call your excellency's attention to the above provision of our law, so that nothing in my notes of June 28, October 3, October 23, November 27, December 6, and December 18, last, may be construed as conflicting therewith.
I avail myself of this opportunity to renew to your excellency the assurances of my highest consideration.
W. W. ROCKHILL.
The Italian charge to the Secretary of State.
ROYAL EMBASSY OF ITALY,
Washington, D. C., March 11, 1906. MR. SECRETARY OF STATE: His excellency the minister of foreign affairs informs me that on December 18 last, by means of an exchange of notes between the royal minister at Peking and the representative of the United States in consequence of a proposal presented by the latter in accordance with instructions received from his Governinent, an agreement was effected for the reciprocal protection of Italian and American trade-marks in the Chinese Empire, similar to that which was concluded in 1903 between Italy and the United States for the protection of trade-marks in Morocco.
Agreeably to instructions received from my Government and by way of perfecting the understanding, I have the honor to advise your excellency that the royal consular officers in China have, with a view to the execution of the said agreement, already been furnished with the same instructions as were at the time sent to the royal legation at Tangier for the execution of the second agreement above referred to and of which this royal embassy transmitted the text, together with the respective accompaniments, to the Department of State in its note of December 19, 1903. Accept, etc.,
a See Foreign Relations for 1905, p. 175.
Minister Rockhill to the Secretary of State.
Peking, China, June 28, 1906. Sir: Referring to my dispatch No. 173 a of December 18 last, informing you that I had effected an agreement with the Italian minister for the reciprocal protection of trade-marks in China, I now have the honor to inform you that I have this date made a similar arrangement with the Russian minister.
I have the honor to inclose herewith copies of the notes exchanged with the Russian minister. I have the honor, etc.,
W. W. ROCKHILL.
AGREEMENT EFFECTED BY EXCHANGE OF NOTES JUNE 28, 1906.
Mr. Rockhill to Mr. Pokotilov.
PEKING, June 28, 1906. MR. MINISTER AND DEAR COLLEAGUE: The Government of the United States being desirous of reaching an understanding with the Government of Russia for the reciprocal protection against infringement in China by citizens and subjects of our respective nations of trade-marks duly registered in the United States and Russia, I am authorized by the Secretary of State of the United States to inform you that the American consular courts in China afford protection against infringement in China by American citizens of trade-marks the property of Russian subjects which have been duly registered in the United States.
I beg that you will kindly inform me whether like protection will be given to American citizens in the consular courts of Russia in China against the infringement by Russian subjects of their trade-marks duly registered in Russia. I have the honor to be, my dear colleague, your obedient servant,
W. W. ROCKHILL. His Excellency D. POKOTILOW, Envoy Extraordinary and Minister Plenipotentiary, etc.,
Russian Legation, Peking.
Mr. Pokotilow to Mr. Rockhill.
PEKING, June 28, 1906. MR. MINISTER AND DEAR COLLEAGUE: I have the honor to acknowledge the receipt of your note of to-day's date by which you kindly inform me that the Government of the United States being desirous of reaching an understanding with the Imperial Government of Russia concerning the protection in China of trade-marks duly registered in Russia and the United States, you have been authorized to declare that the American consular courts in China have jurisdiction in all matters concerning the infringement by persons subject to the jurisdiction of the United States of trade-marks the property of Russian subjects which have been duly registered in the United States.
4 Foreign Relations for 1905, p. 175.
Being duly authorized by my Government, I have the honor to inform you that the Imperial Government is equally ready to insure in China through the Russian consular courts protection for trademarks the property of persons subject to the jurisdiction of the United States and duly registered in Russia which may be infringed by Russian subjects. I deem it necessary, however, to observe that infringements of trade-marks not being considered by the American statutes a criminal offense persons subject to the jurisdiction of the United States having suffered injury can, through reasons of reciprocity, only claim before the Russian courts indemnification for the damages sustained by them.
Please accept, Mr. Minister and dear colleague, the assurance of my highest consideration.
D. POKOTILOW. His Excellency W. W. ROCKHILL, Envoy Extraordinary and Minister Plenipotentiary, etc.,
American Legution, Peking.
PROTECTION OF TRADE-MARKS IN CHINA.
Minister Conger to the Secretary of State.
Peking, China, March 28, 1904. Sir: I have the honor to inclose copy of correspondence with the foreign office concerning the putting in force of the provisions of our treaty in regard to copyrights, trade-marks, and patents, which is self-explanatory.
After waiting a reasonable time, if I am not informed of the completion of its work by the board of commerce, I shall write the foreign office again, and at the same time if a trade-mark should be presented for registration, or any work to be copyrighted, I shall ask that some temporary provisions be made to fit the case. I have the honor, etc.,
E. H. CONGER.
1. Mr. Conger to Prince Ch'ing, March 12, 1904. 2. Foreign office to Mr. Conger, March 26, 1904.
Mr. Conger to the Prince of Ch'ing.
Peking, Jarch 12, 1904. Your IMPERIAL HIGHNESS: I have the honor to remind your imperial highness that the new commercial treaty between the United States and China, signed on the 8th of October last, and ratifications of which have been duly exchanged, is now of force, and that Articles IX, X, and XI provide that the Government of